Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/624585

 

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

SEARCH CLAUSE – PRIOR PENDING APPLICATION

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 79-007245.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant’s filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Notwithstanding the prior pending application, the applicant must respond to the following refusal and informalities.

 

 

SECTION 2(E)(1) DESCRIPTIVENESS REFUSAL

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods or services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods or services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

 

The applicant has sought to register the mark BREATHABLE SLEEP SYSTEM.   The term BREATHABLE is defined as “permitting air to pass through: a breathable fabric.”   The term SLEEP is defined as “a natural, periodic state of rest for the mind and body…”.   The term SYSTEM is defined as “a group of interacting, interrelated or interdependent elements forming a complex whole.”   See the attached entry from The American Heritage® Dictionary of the English Language, Third Edition.   The applicant’s goods are literally a group of interrelated elements, through which air passes through, for person to rest or sleep on.  As such the mark BREATHABLE is descriptive of the applicant’s goods. 

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed.  37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03.  When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

STANDARD CHARACTER CLAIM

 

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

 

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.

 

breath·a·ble

 
breath·a·ble (brê¹the-bel) adjective

1.    Suitable or pleasant for breathing: breathable air.

2.    Permitting air to pass through: a breathable fabric.

—      breath´a·bil¹i·ty noun[1]

 

 

sleep

 
sleep (slêp) noun

1.    a. A natural, periodic state of rest for the mind and body, in which the eyes usually close and consciousness is completely or partially lost, so that there is a decrease in bodily movement and responsiveness to external stimuli. During sleep the brain in human beings and other mammals undergoes a characteristic cycle of brain-wave activity that includes intervals of dreaming. b. A period of this form of rest. c. A state of inactivity resembling or suggesting sleep, unconsciousness, dormancy, hibernation, or death.

2.    Botany. The folding together of leaflets or petals at night or in the absence of light.

 

verb

slept (slèpt) sleep·ing, sleeps verb, intransitive

1.    To be in the state of sleep or to fall asleep.

2.    To be in a condition resembling sleep.

 

verb, transitive

1.    To pass or get rid of by sleeping: slept away the day; went home to sleep off the headache.

2.    To provide sleeping accommodations for: This tent sleeps three comfortably.

 

— phrasal verb.

sleep around Informal.

To be sexually active with more than one partner.

sleep in

1.    To sleep at one's place of employment: a butler and a chauffeur who sleep in.

2.    a. To oversleep: I missed the morning train because I slept in. b. To sleep late on purpose: After this week's work, I will sleep in on Saturday.

sleep out

1.    To sleep at one's own home, not at one's place of employment.

2.    To sleep away from one's home.

sleep over

To spend the night as a guest in another's home.

sleep with

To have sexual relations with.

 

— idiom.

sleep on it Informal.

To consider something overnight before deciding.

 [Middle English slepe, from Old English slæp.][2]

 

 

 

sys·tem

 
sys·tem (sîs¹tem) noun

Abbr. syst.

1.    A group of interacting, interrelated, or interdependent elements forming a complex whole.

2.    A functionally related group of elements, especially:. a. The human body regarded as a functional physiological unit. b. An organism as a whole, especially with regard to its vital processes or functions. c. A group of physiologically or anatomically complementary organs or parts: the nervous system; the skeletal system. d. A group of interacting mechanical or electrical components. e. A network of structures and channels, as for communication, travel, or distribution.

3.    An organized set of interrelated ideas or principles.

4.    A social, economic, or political organizational form.

5.    A naturally occurring group of objects or phenomena: the solar system.

6.    A set of objects or phenomena grouped together for classification or analysis.

7.    A condition of harmonious, orderly interaction.

8.    An organized and coordinated method; a procedure. See synonyms at method.

9.    The prevailing social order; the establishment. Used with the: You can't beat the system.

 [Late Latin systêma, systêmat-, from Greek sustêma, from sunistanai, to combine : sun-, syn- + histanai, set up, establish.][3]